Irit TURBOVICH

Patent Trials and Appeals Board

Sep 2, 2020

13848303 - (R) (P.T.A.B. Sep. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/848,303 03/21/2013 Irit TURBOVICH 58419 4976
67801 7590 09/02/2020
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
c/o Purrfect Patents LLC
11213 Piedmont Drive
Fredericksburg, VA 22407
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IRIT TURBOVICH
Appeal 2019-005832
Application 13/848,303
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
On August 3, 2020, Appellant1 filed a Request for Rehearing
(hereinafter “Request” or “Req. Reh’g) under 37 C.F.R. § 41.52 of the
Decision on Appeal (hereinafter “Decision” or “Dec.”) dated June 2, 2020.
In the Decision, the Board reversed a rejection of claims 1, 9–13, 37,
and 39 under 35 U.S.C. § 112, second paragraph, and affirmed rejections of
claims 1, 9–13, 37, and 39 under 35 U.S.C. § 103(a). More specifically, the

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Irit
Turbovich. Appeal Br. 2.
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Board affirmed a rejection of claims 1, 12, 13, 37, and 39 as unpatentable
over Vincent; a rejection of claims 9 and 10 as unpatentable over Vincent
and Rocher; and a rejection of claim 11 as unpatentable over Vincent and
Sugimoto. Appellant’s Request seeks reconsideration of the Board’s
Decision affirming the rejections under 35 U.S.C. § 103(a).
REQUIREMENTS FOR REQUEST FOR REHEARING
A Request for Rehearing must comply with the following
requirements:
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.
37 C.F.R. § 41.52(a)(1).
OPINION
Appellant asserts that the Board made “an error in misapprehending
[Appellant’s] argument, which misapprehension is based on a gross
misreading of Vincent.” Req. Reh’g 3. According to Appellant, the
argument made by Appellant and misapprehended by the Board was:
Contrary [to Vincent], the appealed claims . . . require
observing involuntary movements of a baby to decide on the
locations being frequently reached or touched. The inventors of
the present application found out that tactile stimulation may
positively affect a baby’s development even when such
stimulation is provided by the baby making involuntary
movements.
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Therefore, the claims of the present application define
that such involuntary movements are observed in order to
define the locations for the textured surface to be applied on.
Vincent as correctly understood specifically rejects such a
concept. Vincent is entirely based on the principle that the
baby’s hand-eye coordination finds the texture surface.
Id. at 4.
Appellant contends that Vincent’s reference to determining a first
development stage of the child indicates that Vincent is not talking about
involuntary movement. Req. Reh’g 2. According to Appellant, “[i]f
Vincent were talking about involuntary movement it would begin at birth so
there is nothing to be determined.” Id.
Appellant cites Vincent’s description of “[a] first attachment for 2-4
month old babies” for providing tactile sensation as evidence that “there is
no contemplation of attachments for younger babies.” Req. Reh’g 2.
Presumably as further evidence to support this position, Appellant also
draws our attention to the sentence bridging pages 2 and 3 of Vincent, which
refers to “the development phase of babies that are 2-4 months old which
may be characterized as a first development phase 101.” Id.; see id. at 3
(calling attention to the fact that, on page 3, in lines 18–21, Vincent defines
the development stage in which babies start to recognize shapes, like to look
at their own fingers, recognize distinct color contrasts such as black and
white, and can support themselves on their forearms and stretch their hands
to touch and grab or release items as “the first” development stage).
Appellant reiterates the position that Vincent has no interest in any earlier
development stage where there would be involuntary movement. Id. at 3.
Appellant argues that the statement “that the various attachments and
development phases are only illustrative examples of the method of the
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present invention” on page 3 “of Vincent indicates that there is a single
method in Vincent” based on voluntary movement and that “[t]here is not an
undisclosed method which is not taught in Vincent and which the skilled
person is directed to uncover” based on involuntary movement. Req. Reh’g
3–4.
Appellant does not persuade us that the Board misread or
misapprehended either the teachings of Vincent or Appellant’s argument.
Rather, it appears that Appellant either misapprehends the rejection or urges
us to insist on an explicit teaching, suggestion, or motivation to modify
Vincent’s method as proposed in the rejection. The Supreme Court has
stated that a rigid insistence on teaching, suggestion, or motivation is
incompatible with its precedent concerning obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007).
The Examiner did not find, nor does the Board, that Vincent explicitly
discloses or teaches a method including observing involuntary baby
movements and finding locations on the garment when worn which
correspond to body locations observed to be more frequently reached by
such involuntary movements. See Ans. 5 (the Examiner expressly finding
that Vincent fails to specifically teach these steps). Rather, the Examiner
determined, and we agree, that it would have been obvious to a person of
ordinary skill in the art to observe both voluntary and involuntary
movements of a baby to determine the baby’s development stage as taught
by Vincent in order to identify the proper locations on the garment to place
attachments to provide stimulation. See id. at 5; Decision 6.
Appellant maintains that Vincent is not concerned with involuntary
movements and is not directed to development stages prior to the
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development phase of babies that are 2–4 months old referred to by Vincent
as “first development phase 101.” Req. Reh’g 2–3. As noted in the
Decision, however, Vincent expressly emphasizes that “the various
attachments and development phases are only used as illustrative examples
of the method of the present invention wherein the attachments are correctly
adjusted to the particular development phase of the baby so that real and
right stimulations are provided.” Vincent 3:3–8; see Decision 8. As further
noted in the Decision, “Vincent teaches that ‘[i]t is . . . possible to provide
tactile stimuli in each developmental stage’” and that, “[f]or example, the
attachment may have texture created by print or surfaces at different levels,
thereby stimulating the tactile senses of the baby.” Decision 8 (first
alteration in original) (citing Vincent 3:25–4:5). Thus, like Appellant,
Vincent also recognizes the importance of providing tactile stimulation in
each development phase. Although Vincent does not expressly mention
involuntary movements or describe development phases in which a baby’s
movements include and may even be limited to involuntary movements,
Vincent does not reject such a concept as Appellant contends. Rather, by
emphasizing that the various attachments and development phases are only
used as illustrative examples and the importance of providing the right
stimulation in each development phase, Vincent conveys that the teachings
should be viewed as expansive and inclusive, and not as being restricted to
the particular embodiment disclosed, with its illustrative attachments and
development phases.
Appellant argues in the Appeal Brief, and reiterates in the Request,
that Vincent intends to develop motor skills by stimulating the baby to
perform movements which the baby is capable of performing based on the
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development stage, and that Vincent provides this stimulation by providing
textured surfaces on locations that the baby should be able to reach at this
stage. Appeal Br. 14; Req. Reh’g 7. Appellant contends that Vincent’s
whole purpose is to cause the baby to make movements to reach the textured
surfaces and concludes from this that Vincent has no interest in the baby’s
involuntary movements. Appeal Br. 15; Req. Reh’g 7. According to
Appellant, “it is only the baby’s capability which interests Vincent.”
Appeal Br. 15; Req. Reh’g 7.
Appellant’s observations about Vincent’s objectives to stimulate the
baby based upon the baby’s capabilities to encourage the baby to make
certain movements do not undermine the Examiner’s reasoning in
determining that it would have been obvious to observe both voluntary and
involuntary movements of a baby to determine the baby’s development stage
as taught by Vincent in order to identify the proper locations on the garment
to place attachments to provide stimulation. At early stages of development,
a baby’s capabilities may include, or even be primarily limited to,
involuntary movements, which, at later stages of development, may become
voluntary movements. As explained in the Decision:
As admitted in Appellant’s Specification, in an early
developmental stage, a young baby whose motor skills are not
yet developed will reach surfaces of a garment by involuntary
movements. See Spec. 9. In light of Vincent’s teaching that it
is possible to provide tactile stimuli in each developmental
stage, with the three specifically disclosed phases being “only
used as illustrative of the method” (Vincent 3:3–5, 25–26), one
of ordinary skill in the art would have readily appreciated that
Vincent’s method could also be used to provide tactile stimuli
for an earlier developmental stage in which the baby has not yet
developed motor skills but can reach surfaces of the garment by
involuntary movements, as well as for a developmental stage in
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which the baby has developed some motor skills but also
reaches some surfaces of the garment by involuntary
movements. Thus, in order to determine the developmental
stage of the baby, it would have been obvious to observe both
voluntary and involuntary baby movements. Further, in
applying Vincent’s teachings to the aforementioned early stage
of development, in which the baby has not yet developed motor
skills, a person having ordinary skill in the art would have been
prompted to place the tactile stimulation attachments at
locations on the garment corresponding to body regions
observed to be more frequently reached by such involuntary
baby movements.
Decision 8–9.
Appellant interprets the Board’s Decision as finding “that Vincent
does contemplate involuntary motion, since he teaches that the method
provided by him may be more generally applicable.” Req. Reh’g. 8.
Appellant misinterprets the Board’s Decision. Neither the Examiner nor the
Board finds that Vincent expressly contemplates involuntary motion.
Rather, the Board finds that Vincent emphasizes that the teachings of the
reference are applicable to all stages of a baby’s development and are not
restricted to the particular stages of development discussed in the illustrative
embodiment disclosed. A person having ordinary skill in the art would have
appreciated that various stages of development of a baby include both
voluntary and involuntary movements, and may in fact be limited primarily
to involuntary movements. See Spec. 9. Thus, the Board determined that
the Examiner’s articulated reason for the proposed modification of Vincent
(i.e., to observe a baby and the baby’s movements, both voluntary and
involuntary, to determine the baby’s development stage to identify the
proper locations on the garment to provide stimulation) has rational
underpinnings. See Decision 6, 8–9.
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Appellant argues that modifying Vincent by observing involuntary
movements, in addition to voluntary movements, “consists of impermissible
hindsight.” Req. Reh’g 8. This simply rehashes the hindsight argument
presented in the Appeal Brief and is not persuasive. See Appeal Br. 15; see
also Reply Br. 4 (asserting that the Examiner’s reasoning “constitutes
impermissible hindsight”). As pointed out on page 9 of the Decision,
Appellant does not identify any flaw in the Examiner’s
reasoning or point to any knowledge relied on by the Examiner
that was gleaned only from Appellant’s disclosure and that was
not otherwise within the level of ordinary skill in the art at the
time of the invention, thereby failing to support Appellant’s
hindsight assertion. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971) (“Any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction
is proper.”).
For the above reasons, Appellant’s Request does not persuade us that
the Board misapprehended or overlooked Appellant’s argument or the
teachings of Vincent, or otherwise erred in sustaining the rejections of
claims 1, 9–13, 37, and 39 under 35 U.S.C. § 103(a).
CONCLUSION
Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1, 12, 13, 37,
39
103(a) Vincent 1, 12, 13,
37, 39

9, 10 103(a) Vincent, Rocher 9, 10
11 103(a) Vincent, Sugimoto 11
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Overall
Outcome
1, 9–13, 37,
39

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 9–13, 37,
39
112,
second
paragraph
Indefiniteness 1, 9–13,
37, 39
1, 12, 13,
37, 39
103(a) Vincent 1, 12, 13,
37, 39

9, 10 103(a) Vincent, Rocher 9, 10
11 103(a) Vincent, Sugimoto 11
Overall
Outcome
1, 9–13, 37,
39

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED